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Is this liklihood of confusion argument going in the right direction?

Posted by . updated on 11/11/2009
I found this website today while searching for effective ways to respond to an office action regarding liklihood of confusion. I think everyone on here is very helpful and courteous.

Anyway, my question. Would distinguishing my trademark application with a registered mark by arguing my mark is a trademark and the registered mark is a servicemark sufficient? Alone, it may not be but our names are a tad bit dissimilar. Think chocolate milk and chocolatemilky.

This is my first response to an office action so I don't want to screw it up! Thank you for your help 
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Answers (5)
 
JSonnabend
Without more detail, it isn't possible to say whether the argument is persuasive or not. 

For example, if the goods are motor oil and the services are oil change services, then the argument probably falls flat.  On the other hand, if the goods are diamond necklaces and the services are ditch digging services, then the argument probably succeeds, but not because one is goods and the other service, but instead because they are dissimilar.

- Jeff
 
 
amelia
Ok, makes sense. More details. Let's say, the Registrant's service is an ice-cream store named "milky ice-cream" that sells ice-cream. And the Applicant's goods are milk containers, ice-cream makers, ice-cream scoops, etc. with the name "ice-cream milk". Is that way too similar and we will never win the LOC argument?
 
 
JSonnabend
It is impossible to provide any useful advice based on a hypothetical.  You'll have to either make the LOC determination yourself or speak directly to an attorney for better guidance.

- Jeff
 
 
10YearReg
Quote from: amelia on 12-23-08 at 05:36 pm
Ok, makes sense. More details. Let's say, the Registrant's service is an ice-cream store named "milky ice-cream" that sells ice-cream. And the Applicant's goods are milk containers, ice-cream makers, ice-cream scoops, etc. with the name "ice-cream milk". Is that way too similar and we will never win the LOC argument?

But just for fun, based on your hypothetical, I reject your application if I'm the Examiner.

 
 
JSonnabend
Quote from: 10YearReg on 01-05-09 at 07:17 am
Ok, makes sense. More details. Let's say, the Registrant's service is an ice-cream store named "milky ice-cream" that sells ice-cream. And the Applicant's goods are milk containers, ice-cream makers, ice-cream scoops, etc. with the name "ice-cream milk". Is that way too similar and we will never win the LOC argument?

But just for fun, based on your hypothetical, I reject your application if I'm the Examiner.



Wow, that's incredibly useless information.  Would you mind sharing the basis for the hypothetical rejection?

- Jeff
 

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Anyway, my question. Would distinguishing my trademark application with a registered mark by arguing my mark is a trademark and the registered mark is a servicemark sufficient? Alone, it may not be but our names are a tad bit dissimilar. Think chocolate milk and chocolatemilky.

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